Download pdf - Critical IP Issues for Startup (Venture Fast Track)

Nutter McClennen & Fish LLP Seaport West 155 Seaport Boulevard Boston, Massachusetts 02210 Telephone 617.439.2000

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Critical IP Issues for Startups

October 24, 2013

Paul Cronin, Nutter McClennen & Fish LLP Heather B. Repicky, Nutter McClennen & Fish LLP Mac Dougherty, Cognitive Electronics Chuck Toye, Cognitive Electronics

Nutter McClennen & Fish LLP • www.nutter.com 2

Your IP Strategy Should Identify: •  Offensive uses of IP – How will you create barriers to

entry that keep competitors behind you

•  Defensive uses of IP – How will you keep control of the important aspects of your business

•  IP assets – How can you build value using your IP portfolio

•  IP liabilities – How will you avoid the potholes

INTELLECTUAL PROPERTY



Short Term

Business Goals

$ Long Term Business

Goals

Marketplace &

Competitors

Technical Need

Timing



• Patents • Trademarks/Trade Dress • Copyrights • Trade Secrets • Employment Agreements & NDAs*


PATENTS

Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent . . . . ”


PATENTS

•  First-to-file system •  20 year term •  On-sale/Public disclosure bar •  Territorial rights •  $

4 Basic Patent Issues Will Immediately Come Into Play As You Are Developing Your IP Strategy


TRADEMARKS AND SERVICE MARKS

• Definition: word, phrase, symbol, or design that is used to identify the source of goods/services and to distinguish them from others


TRADEMARKS AND SERVICE MARKS

•  Think about developing a brand •  Clear your mark •  Consider filing for trademark registration,

even if you have not begun using the mark

3 QuickTips Relevant To Trademark Issues:


COPYRIGHTS

• Requirements: Original work of author • Ownership: Author, unless work made for hire • Open Source Issues

Copyrights are not just relevant to painters and novelists.


TRADE SECRETS

• Definition: (1) Information that derives an economic value and is not readily ascertainable and (2) reasonable effort is made to maintain secrecy


EMPLOYMENT AGREEMENTS & NDAs

•  Ownership of IP •  Non-competition Agreements (jurisdictional) •  Use of NDAs with vendors/suppliers •  Spend time coming up with a description that

doesn’t reveal your trade secrets but shows the company value





Top Of Mind Issues

• Ownership of IP • Protecting your trade secrets • NDAs and the Pitfalls of Disclosure By

Third Parties • Provisional Patent Applications • Copyright Licensing Issues


Questions?


THANK YOU